DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant’s preliminary amendment has been entered. Claims 1-8 are pending in the present application.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because:
Reference character “70” has been used to designate both an indicated level in Figure 3 (page 15 line 10 the instant specification) and an abandoned deep mine in Figure 8 (page 20 line 18 in the instant specification).
Reference character “72” has been used to designate both a pipe in Figure 3 (page 15 line 11 in the instant specification) and a mineshaft in Figure 8 (page 20 line 18 of the instant specification).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 1 is objected to because of the following informalities:
In claim 1 please delete the phrase “surface coal mining” from “a surface coal mining or strip mining”. It is clear from the disclosure as filed that the surface coal mining and strip mining refer to the same mining process, not alternatives, and claim references to “strip mining” which do not reference “surface coal mining” could potentially raise confusion as to whether or not the references to strip mining apply to surface coal mining.
Appropriate correction is required.
Claim Interpretation
The present specification defines SMI as “Sulfur Modified Iron”; therefore, all claimed instances of “SMI” will be interpreted as “Sulfur Modified Iron”.
Drawings
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “essentially parallel cuts” in claim 1 line 2 is a relative term which renders the claim indefinite. The term “essentially parallel cuts” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The specification as filed does not indicate the extent to which alignment of cuts is permitted to deviate from parallel and still be considered essentially parallel within the present disclosure. The specification as filed discloses parallel cuts. This source of indefiniteness may be overcome by deleting “essentially” from the limitation “essentially parallel cuts”.
The term “highly acidic” in claim 1 line 6 is a relative term which renders the claim indefinite. The term “highly acidic” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The disclosure as filed indicates adjusting the pH from 4 to 5.5; however, the disclosure as filed does not provide a pH for the acidic water prior to adjustments. The disclosure as filed is sufficient to support acidic water, and this ground of rejection may be overcome by deleting “highly” from the limitation “highly acidic”. What is or is not considered “highly” acidic may differ from one person to another, but what is or is not considered acidic is very well established.
The term “deep within the final cut lake” in claim 1 line 7 is a relative term which renders the claim indefinite. The term “deep within the final cut lake” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is not clear from what lake depth acid raw water must be withdrawn in order for the withdrawal to be considered from “deep” within the final cut lake. As the activity recited in claim 1 does not appear to require water withdrawal from a particular depth, applicant could consider deleting the word “deep” from the claimed phrase “deep within the final cut lake”.
Claims 2-8 are rejected under 35 USC 112(b) because they depend on claim 1.
Claim 3 recites the limitation "the adjusted pH range" in the first line of the claim. There is insufficient antecedent basis for this limitation in the claim. Claim 1 claims “assuring pH of the raw water is within a preselected range, and adjusting pH of the raw water as necessary”, but assuring pH of raw water is in a predetermined range adjusting pH only as necessary does not always result in an adjusted pH range. As claim 1 appears intended to encompass any scenario wherein raw water pH is in a predetermined range whether or not the pH is adjusted, the claimed adjustment step does not appear necessary for claim 1. Further if the adjusted pH range is numerically the same as the pH within the predetermined range, claim 3 may claim the predetermined pH range of the raw water is a range of about 4 to pH 5.5 instead of the adjusted pH range.
The term “high-velocity upflow” in claim 7 is a relative term which renders the claim indefinite. The term “high-velocity upflow” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is not clear in view of the specification, how high the upflow velocity must be in order to be considered “high-velocity” upflow. This particular ground of rejection may be overcome by deleting “high-velocity” from the phrase “high-velocity upflow”.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 and 15 of U.S. Patent No. 11,230,753 in view of Gates (Gates, Lathrop M. "Strip Mine Reclamation Regulation." Mo. L. Rev. 39 (1974): 429).
Regarding instant claim 1, the patent claims a method for recovering rare earth elements (REEs) (claims 1, 15) from coal mining operations (claims 10-13). The patent claims withdrawing acidic raw water (claims 1 and 15) from coal mining sources (claims 10-13), including from mining pools (claim 10) and leached mining waste (claims 11-12). The patent claims assuring pH of the raw water is within a preselected range, and adjusting pH of the raw water as necessary (claims 1 and 15). The patent claims directing the raw water through a reactor column, in a vessel containing a contact bed of SMI which is contacted by the raw water, thereby removing from the water and attaching to the SMI REEs from the water, along with additional substances that may be present in the raw water (claim 1). The patent claims after a period of time in which the raw water passes through the reactor column and the SMI becomes less effective in removing REEs from the water, discontinuing directing of the raw water through the contact bed, and subjecting the SMI to an REE recovery process in which at least some of the REEs are recovered (claim 1).
The patent does not claim the strip mining steps recited in present claim 1.
Gates is a law review article on strip mining regulations for mining coal (title, Introduction page 429). Gates teaches that area strip mining is employed in flat region (introduction page 430). Gates teaches that area stripping comprises making a series of parallel cuts and piling removed overburden alongside each cut (Introduction page 430). Gates teaches that the purpose of the mining is to extract coal (Introduction pages 429-430), thereby suggesting that coal is removed from overburden. Gates teaches that in area mining overburden is used to backfill previous cuts and that the final cut is left unfilled (Introduction page 430). Gates teaches that strip mining results in acidic water seeping into lower lands and streams (Introduction page 430), and Gates teaches that water may accumulate on surface mined land (Control of the Mining Operation section page 439-440). Gates teaches that chemicals in the overburden cause the acidity (Introduction pages 430-431). Gates teaches that the acidic water resulting from the mining is problematic pollution to be controlled (Introduction page 430, Control of the Mining Operation section page 439-440, Reclamation Requirements and Bonding section page 442).
The patent claims and Gates teaches conditions for handling acidic water resulting from coal mining operations.
It would have been obvious to one of ordinary skill in the art, at the time of filing, to apply the patented rare earth element recovery method to the area strip mining process discussed by Gates because Gates teaches that area strip mining results in the acid water formed from coal mining waste from which the patent claims recovering rare earth elements (patent claims 1, 10-13). Such application would result in recovering rare earth elements from a surface coal mining or strip mining operation in which a series of parallel cuts are made removing overburden which is piled alongside each cut, coal is removed from each cut and overburden from a cut is used to backfill a previous cut, and in which a final cut is left after completion of the strip mining operation (Introduction pages 429-430). As Gates teaches that acid water accumulates on both lower land and strip mined land (pages 430, 439), one of ordinary skill in the art would expect water to accumulate and form a lake in the last cut which Gates teaches is unfilled by overburden (page 430). As Gates teaches that the acid water is the result of leaching through overburden (pages 430-431), and that water accumulates on lower, strip mined lands (pages 430, 439), one of ordinary skill in the art would expect some water leached through the cuts backfilled with overburden taught by Gates (page 430) to contribute to filling the final cut left open with water.
Limitations of instant claims 2-8 are recited in patent claims 2-9.
Allowable Subject Matter
Claims 1-8 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, and upon filing a proper terminal to overcome the rejection on the ground of nonstatutory double patenting over claims of US patent 11,230,753, set forth in this Office action.
Independent claim 1 claims a method for recovering rare earth elements (REEs) from a surface coal mining or strip mining operation. Claim 1 claims that in the mining operation a series of cuts are made removing overburden which is piled alongside each cut, coal is removed from each cut and overburden from a cut is used to backfill a previous cut. Claim 1 claims that in the mining operation a final cut lake is left after completion of the mining operation, the lake filling with water leached through the backfilled cuts and being acidic. The statements recited in the preamble of claim 1 do result in a manipulative difference over the steps recited in the body of claim 1 in isolation; therefore, the steps recited in the preamble of claim 1 are claim limitations. See MPEP 2111.02 for further discussion on why the steps recited in the preamble are considered limitations of claim 1. Claim 1 claims withdrawing acidic raw water from within the final cut lake. Claim 1 claims assuring pH of the raw water is within a preselected range. Claim 1 claims directing the raw water through a reactor column, in a vessel containing a contact bed of SMI (sulfur modified iron) which is contacted by the raw water, thereby removing from the water and attaching to the SMI REEs from the water, along with additional substances that may be present in the raw water. Claim 1 claims after a period of time in which the raw water passes through the reactor column and the SMI becomes less effective in removing REEs from the water, discontinuing directing of the raw water through the contact bed. Claim 1 claims subjecting the SMI to an REE recovery process in which at least some of the REEs are recovered.
The present office action rejects claims on the ground of nonstatutory double patenting over claims of U.S. Patent No. 11,230,753 in view of Gates (Gates, Lathrop M. "Strip Mine Reclamation Regulation." Mo. L. Rev. 39 (1974): 429). Examiner of US patent 11,230,753 identified US20030196961 as the closest prior art reference. US20030196961 discloses removing impurities from water with a reactor comprising a contact bed of SMI. US20030196961 does not disclose that the reactor comprising a contact bed of SMI can remove and recover rare earth elements from the water. The present nonstatutory double patenting rejection relies on Gates for strip mining limitations and not on limitations regarding the chemistry of rare earth recovery. Claim 1 defines over US20030196961 and over US20030196961 in view of Gates at least in claiming removing from the water and attaching to the SMI REEs from the water, along with additional substances that may be present in the raw water, and subjecting the SMI to an REE recovery process in which at least some of the REEs are recovered.
Santina (US9427706), cited in the IDS filed May 23, 2024, discloses a method of removing selenium from water leached from strip mining overburden. Santina discloses removing selenium with a reactor comprising a contact bed of SMI. Santina does not disclose that the reactor comprising a contact bed of SMI can remove and recover rare earth elements from water. Claim 1 defines over Santina at least in claiming removing from the water and attaching to the SMI REEs from the water, along with additional substances that may be present in the raw water, and subjecting the SMI to an REE recovery process in which at least some of the REEs are recovered.
Ziemkiewicz (US20220340997) is a publication of a United States patent application, which was effectively filed prior to the effective filing date of the discloses recovering rare earth elements from acid water from coal mines. Ziemkiewicz concentrates rare earth elements by reacting in aqueous solutions. Claim 1 defines over Ziemkiewicz at least in claiming directing the raw water through a reactor column, in a vessel containing a contact bed of SMI.
Claims 2-8 depend on claim 1. Dependent claims define over the prior art at least for the reasons given above with respect to claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN P O'KEEFE whose telephone number is (571)272-7647. The examiner can normally be reached MR 8:00-6:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SEAN P. O'KEEFE/ Examiner, Art Unit 1738
/SALLY A MERKLING/ SPE, Art Unit 1738